Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Sunday, 31 July 2005

The BBC reports that the FBI has broken up an international piracy ring. Eight gentlemen involved in the “warez” scene were arrested in Charlotte, North Caroline. The men were involved in copying films that then made their way to P2P networks across the world.

The IPKat welcomes in particular measures which are aimed that the source materials of file-sharing.

Sitting as a Deputy Chancery Division Judge last week, Roger Wyand QC was faced with a battle over 'personal harmonisers' in Sales v Stromberg[2005] EWHC 1624 (Ch). Personal harmonisers are used in complementary medicine, being decorative articles worn as pendants and which contain allegedy energised or ‘imploded’ water treated by a process that involves centrifuging. Stromberg sold ‘Vortex Energisers’, cone shaped copper-tube spirals containing imploded water. From February 2003 Stromberg and another defendant traded as the Centre for Implosion Research; a third defendant handled the Centre's international sales. In 1997 Sales, a kinesiologist, contacted the defendants to find out more about imploded water and its uses. After they sent Sales a prototype of a personal harmoniser (illustrated below), he sent them the details of designs; they in turn undertook that they would not use the designs without the Sales' agreement.

The designs which Sale sent were rough sketches (illustrated here, top right) of, inter alia, a double spiral design called ‘Infinity’ and a triple spiral design called ‘Trinity’. When the defendants told Sales they planned to make and sell personal harmonisers under the Infinity and Trinity designs, he asked for a royalty of 10% of each sale. The defendants offered him just £200 in consideration of the designs, saying that they had been developing personal harmonisers similar to his ones even before he contacted them, these being based on ancient designs used by mankind throughout the ages. Sales sued for breach of confidence and for infringement of unregistered design right under the Copyright, Designs and Patents Act 1988. The defendants said the rough sketch setting out the designs was not a 'design document' within the meaning of the 1988 Act and denying infringement even if it was such a document.

Roger Wyand QC ruled that, on the evidence, Sales' claims for design right infringement and breach of confidence succeeded in respect of the Infinity design but failed in respect of the Trinity design. In his judgment he held as follows:

* Sales' designs were original in a copyright sense and were not commonplace.

* design right subsisted in the rough sketch since it was a design document.

* As to the Infinity design, there was an unbroken chain of causation that ran from the submission of Sales' design documents, through the prototype made to that design, to the final commercial product. Since the defendants’ products were basically the same as Sales' for Infinity, they were infringing articles;

* Since the Trinity design was not clearly the same as that which was shown in the design document, the claim for infringement of that design failed.

The IPKat is thoroughly sceptical about a lot of so-called complementary medicine. He is a little less sceptical about design right which, on the empirical basis of this case, works 50% of the time.

More on personal harmonisers here and hereMore on kinesiology hereCheck this out on Quackwatch here

Saturday, 30 July 2005

After a long trek through the courts, La Mer Technology Inc v Laboratoires Goemar SA[2005] EWCA Civ 978 may finally have to come to rest. Yesterday the Court of Appeal for England and Wales allowed the trade mark owner's appeal against a ruling that it had not made genuine use of its trade mark.

Goemar, a French company that made things out of seaweed, owned the UK registered trade mark LABORATOIRE DE LA MER for perfumes and cosmetics containing marine products. Goemar made only very imited sales of LABORATOIRE DE LA MER products to a small enterprise that was its agent in the UK and there was no evidence of any sales being made to members of the public as consumers or end-users. La Mer (part of the Estee Lauder group) sought to revoke Goemar's mark on the ground of non-use of the mark for a period of five years. The registrar dismissed that application and La Mer. The appeal judge (Mr Justice Jacob) stayed the appeal and referred to the European Court of Justice for a preliminary ruling questions as to what quantity and kind of use are sufficient to prove that a mark has been put to genuine use.

The ECJ meanwhile, having given a ruling on much the same questions in Case C-40/01 Ansul , gave its decision on this reference in the form of an order, on the basis that the answers to the questions could be clearly deduced from its earlier judgment.

By the time the High Court had the answers to its questions, Mr Justice Jacob had been promoted to the Court of Appeal and a new judge had to be found: this was Mr Justice Blackburne. He ruled that there had been no ‘genuine use’ of the mark in the UK, having found that genuine use of the mark required that it come to the attention of end-users and consumers during the relevant period. In his opinion the acts of importation during the relevant period by an independent importer in to the UK of goods bearing the mark did not by themselves amount to genuine use of the mark; additionally, the proven use during the relevant period was insufficient to create a market share for the goods protected by the mark. He therefore allowed La Mer's appeal and revoked the trade mark for non-use. Goemar appealed, arguing that the effect of Blackburne J's judgment was to erect a quantitative and qualitative test for market use and market share which was not set by the ECJ.

Allowing Goemar's appeal, the Court of Appeal held as follows:

* purely token use of a mark did not count as genuine use, although it did not follow that every case of non-token use would qualify as genuine use;

* 'internal' use by the trade mark owner, within its own business, did not count as genuine use;

* so long as the use of a mark was neither token nor internal, imports by even a single importer could suffice for determining whether there was genuine use of the mark on the market;

* there was no quantitative or qualitative test for market use and market share;

* in this case, the modest amount of quantities involved and the more restricted nature of the import market had not prevented the use of the mark on the goods from being genuine use on the market.

The IPKat has to concede that this approach is right. He also recommends a read of the recent Irish Patent Office decision in Stefcom's trade mark, which takes a thoroughly sensible approach to the assessment of evidence of small-scale use of a trade mark. He wonders, though, whether consumers might associate the little-used LABORATOIRES DE LA MER mark with the more popular COCO DE MER brand.

Some may say that the IPKat is scraping the bottom of the barrel, but your favourite feline is never chicken when it comes to bringing you the latest IP news.

eMediaWire reports that BassPro and Cajun ChickCan have settled their patent dispute, with BassPro agreeing to buy all equipment covered by the patents in question from Cajun Chickcan’s licensed distributors in future. The patents in question cover devices for making “Beer Butt Chicken”. It appears that the recipe for this delicacy is rather popular across the Pond.

“The trick is to make sure that the can, inserted in the posterior end of the bird, is at least half-filled with liquid, which seasons and moistens the chicken with flavorful steam” say the article. The can in question can be filled with beer or any other non-diet beverage.

Agilent, who owned a patent for a pump and control system, sued Waters for infringement. The court had previously found that an earlier automatic version of Waters' device infringed the patent, which was valid. Waters then produced a manual version of the device, which was the subject of this action. The pump and control system of the manual device operated in ‘manual mode’, with the flow rate and stroke length being independently selected by the operator. There was no automatic change of range and the manual device no longer maintained any predetermined relationship between stroke length and flow rate other than that imposed by the device's maximum and minimum possible frequencies and stroke lengths. The sole question before Pumfrey J was whether claim 1 of Agilent's patent covered the manual device. He said it did not, so Agilent appealed, maintaining that the characterising portion of claim 1 provided:

‘Control Means (a) coupled to the drive means (b) for adjusting the stroke length of the pistons … (c) in response to the desired flow rate of the liquid delivered … (d) with the stroke volume … being decreased when the flow rate is decreased and vice versa, (e) such that pulsations in the flow of liquid delivered to the output of the pumping apparatus are reduced’,

and that those words covered Waters' manual device as a matter of plain language.

The Court of Appeal upheld Pumfrey J's interpretation of the patent, adding that patent claims should be construed as read by the notional skilled man in context. In claim 1 it was the ‘control means’ and not the operator which was to adjust the stroke length ‘in response to the desired flow rate’. The operator was not part of the control means and the response called for by feature (c) of the claim was not present in Waters' device.

The IPKat concurs with this conclusion. Indeed, he thinks it would have been difficult to reach any other conclusion and wishes that cases like this didn't get appealed quite so often ...

The excellent Patent Baristas blog reports that President George W. Bush has appointed Chris Israel as the new Coordinator of International Intellectual Property Enforcement, a position Congress created last year to coordinate law-enforcement efforts aimed at stopping international copyright infringement and to oversee a federal umbrella agency responsible for administering intellectual property law. Intellectual property law enforcement is divided among a range of agencies, including the Library of Congress, the Justice and State departments and the U.S. Trade Representative.

As the Coordinator for International Intellectual Property Enforcement, Israel will head the international work of the National Intellectual Property Law Enforcement Coordination Council (NIPLECC) and coordinate and supervise international intellectual property protection plans among other agencies. This is a part of the implementation of the Bush administration's "Strategy Targeting Organized Piracy (STOP)" initiative. The initiative protects American businesses and their products from counterfeiters and pirates. The Patent Baristas note that, though NIPLECC has been around since the early 1990s, it has never actually done anything. The hope is that giving the organisation some money and a new charter will finally give the office some backbone.

A major goal is to reduce counterfeits in China, where the piracy levels approach 90%. The Commerce Department estimates that nearly 7% of the products in the global market are counterfeit, costing U.S. companies up to $200 billion a year in lost sales.

2 A little light holiday reading

Legal scholar and IPKat friend Mikko Valimaki has put the entire text of his PhD thesis online. Entitled The Rise of Open Source Licensing: a Challenge to the Use of Intellectual Property in the Software Industry, Mikko's work draws on detailed case studies, historical narrative and the application of economic theory in seeking to show how open source licensing is used for strategic advantage.

He says: "Interestingly, everything has worked despite - rather than because of - ever-expanding intellectual property rights" and he concludes "This book goes beyond fear and doubt arguing that such legal risks are in the end just necessary but manageable uncertainties, which always come with a new business model".

3 More on DYKES ON BIKES

Andrea Glorioso has sent the IPKat this follow-up from the EFF on the non-registrability in the United States of the word mark DYKES ON BIKES for offensive content.

"When word got out recently that a trademark application for the San Francisco-based nonprofit group Dykes on Bikes was rejected, EFF did some further research into the grounds for rejection. ... Despite the more than 400 pages of scholarship submitted in support of the application, the US Patent and Trademark Office relied on two dictionary definitions as proof that the word was "offensive." The first definition originated from an online version of the 1913 Webster's dictionary. Beyond its age and out-of-date nature, the dictionary's definition also had the tag "PJC" on it. We were intrigued, so we decided to investigate further.

It turns out that "PJC" stood for "Patrick J. Cassidy" of Micra, the company that created the online version. Terms in the dictionary bearing his "tag" indicate that they were not, in fact, part of the original dictionary he had transcribed online but rather something that he himself had arbitrarily added. So in essence, the PTO relied on a definition that was created at random by someone not at all associated with Webster's dictionary. The second definition the PTO relied on came from an online dictionary of Spanish slang that listed "dyke" as a "vulgar word." Once againthere was no accountability for the definition -- it was just one person's site giving what they consider vulgar words in Spanish.

The PTO gave no reason or justification for why these two websites were somehow more influential or credible than the over 400 pages submitted by DOB. Interestingly, the PTO approved trademarks for "Hustler's Young Sluts," "Psychic Phone Whores," and "Psychobitch." All three terms -- "slut," "whore" and "bitch" -- are listed as vulgar in that Spanish slang dictionary the PTO chose to rely on in this case".

Well done, EFF, says the IPKat. Dictionaries -- even when accurate -- are frequently used as an excuse for not having any genuinely reliable evidence on hand. But, er, can anyone tell him what a psychic phone whore is supposed to be?

4 Putin' on the Agony

Ananova reports that it has become highly fashionable in Russia to have oneself tattooed with a portrait of the increasingly unopposed President Vladimir Putin (seen, left, in conversation with one of his spin doctors). The IPKat is quite concerned that the poor man's rights of publicity and personality are coming under threat. When this retiring gentleman hands over the keys of office to his successor and retires to the secluded splendour of his dacha to write his memoirs, might it not be offensive for him to be continuously confronted by images of his younger self adorning odd strips of pale, exposed Russian skin? Also, might his successor not feel safer in office if, on assuming the Presidency, he were to order the removal of all Putin tattoos?

The IPKat found this from CNET News, via ZDNet, while prowling his cyberpitch earlier this week. It seems that eBay is seeking a patent ruling from the US Supreme Court as to whether it and other companies liable for patent infringement should be routinely subject to injunctions while the infringement actions remain on appeal.

The IPKat likes the idea that courts should be given plenty of discretion to determine whether, in the circumstances of each case, the injunction should bite pending the appeal result, since there are so many permutations of fact that you can't make a single rule. But there is a downside: the more discretion the courts have, the more necessary it is for parties to litigate in order to find out whether they can carry on using a technology pending an appeal. The best solution is to leave discretion to the courts, but formulate a set of guidelines that the courts will be charged to depart from ONLY when there is substantial justification for doing so.2 Law and Information Technology

Oxford University Press publish a journal, the International Journal of Law and Information Technology, which the IPKat thinks might be interesting to some of the more info-techie visitors to his blog. Its General Editors are Linklaters' Christopher Millard and guru Richard Susskind, with a strong supporting cast. The summer 2005 issue includes the following offerings:

The Eden Project itself was a hugely successful piece of IP creation, but the fall-out in legal terms was catastrophic. The Project's founder Jonathan Ball ended up being removed from it and there was substantial trade mark litigation in which he also had the EDEN PROJECT trade mark taken from him and returned to the Project. Following a massive conflict of interests, Ball sued solicitors Druces & Attlee for professional negligence and was awarded £2 million damages. The valuation of a business plan containing confidential information was another area of IP interest. Speakers are Jonathan Ball, together with ace litigator Larry Cohen (McDermotts) and Kelvin King (Valuation Consulting).

This seminar, hosted by McDermotts'; London office, takes place on Wednesday 21 September. Surprisingly, electronic details are not yet available on any of the participants' websites, but the three sheets of A4 paper, printed on one side only and sent out by the Institute, contain all you need to know plus a registration form. No entry fee is mentioned and there are refreshments ...

Once again, apologies to those of you who received a half-baked blog with your emails yesterday. This is what it should have looked like ...1 We always knew ...

The IPKat found this on fcw.com; it's on a report concerning the exodus of patent examiners from the United States Patent and Trademark Office (USPTO).

This report informs us that the Office has been beset by recruitment problems, a culture of poor employee/manager relations, the lack of an effective management strategy for communicating and collaborating with examiners, outdated assumptions about production quotas that managers use to reward examiners and a lack of mandatory continued technical training for patent examiners, not to mention good old fashioned stress.

Strained employee/manager relations at USPTO reportedly stem from managers who "don't respect the input and advice they get from their employees." A related cause is patent examiners' discontent with what they say are unreasonable production quotas that examiners must work overtime to meet. Says one concerned party: "This is a legal sweatshop here. The truth is we could do a better job with more time".

"The incredible surge of patent applications, especially in the software and internet business method arena, is just crushing them, and the management problems are rising to the surface with greater visibility for those reasons. Where anything under the sun is patentable, it puts an unbelievable amount of pressure on the patent office".

The IPKat has total sympathy for USPTO employees. Just think how little they get paid -- especially compared to patent and trade mark practitioners who are paid to run rings around them.

2 A big mistake?

The State of Kerala, India, is trying to get international patents for herbal formulations and other medicines currently in use by traditional tribal practitioners, for the aged, Scheduled castes and tribes, Backward Classes Welfare Minister A P Anilkular told the State Assembly earlier this week. He said systematic studies were being conducted by various research organisations for the purpose. Mr Anilkular added that the Government was also implementing a project, under the Tropical Botanic Garden, Palode, near here, to prepare a database of tribal knowledge by digitalising it. Besides this, work on collecting and protecting traditional treatment methods wasbeing taken up by the 'patent cell' under the Ayurveda Medical Education Department.

The IPKat wonders how much money is likely to be wasted in applying for patents that cannot be valid since the traditional medicine covered by them will be found to be part of the prior art. He also observes that, once the subject-matter of these formulations is published in patent applications, it will just be a matter of time before everyone can freely and easily copy them. Is that what the Minister wants?

3 Latest Trademark Worlds

The IPKat's supply of Trademark World has been rather interrupted of late. This might be because the June issue, fronted by the dazzling if improbably named Paris Hilton (below, left), never reached him and is presumed kidnapped by the local postmen. The July/August issue, fronted by the more wrinkled but no less dazzling Jackie Chan (right), is in the Kat's paws right now. So, what do the two most recent issues have to offer?The June issue features Albert Tramposch (INTA) on criminal counterfeiting and veteran commentator Michael Cover (Charles Russell) on the CTM appeal procedures to the Court of First Instance.

The July/August issue carries an article by Justin Watts and Ivan Waide (Freshfields) on dealing with parallel imports from territories outside the European Economic Area, a very interesting piece by Alasdair Bleakley (Addleshaw Goddard) on MG Rover and the case for IP audits, plus a survey of Australian passing off, trade mark infringement cases involving jurisdiction over the internet by Blake Dawson Waldron's Lisa Ritson and Brian Elkington.

Thursday, 28 July 2005

Botswana has decided not to have a copyright act after all the Daily News Online reports. The Copyright and Neighbouring Rights Bill was to improve copyright protection and set up a Botswanan copyright office. A copyright society, responsible for facilitating collection and distribution of royalties, was also to be set up.

Botswanan dancers only benefit from limited copyright protection

If anyone knows why the Bill was scrapped, the IPKat would be interested to know.

Our email subscribers will have received a few minutes ago a substantially incomplete blog. It was all my fault. The phone went off while I was composing and startled me; I pressed the "post" button instead of the "save as draft" button. The "real" blog isn't destined to be posted for a while. I apologise for any annoyance or inconvenience caused.

The UK Patent Office is undertaking a pre-consultation exerciseon whether the Trade Mark Registrar should continue to conduct examinations of trade marks on the relative grounds. The pre-consultation is designed to identify major issues ahead of a full-scale consultation in 2006. A previous consultation took place in 2001 where 72% of those who expressed a view recommended a further consultation in the future. Since then the opposition system has changed so that where a mark is over 5 years old, the opponent must show use. Also, the Registry has introduced a system of preliminary indications in opposition cases. The pre-consultation only covers relative grounds objections by the Registrar. Rights owners would retain the right to undertake oppositions.

The IPKat says that this would be a major change. The relative grounds examination is one of the more special features of the UK system. It’s a bit of a luxury though and there’s certainly a financial argument instead of leaving it to owners to enforce their earlier rights.

Wednesday, 27 July 2005

The mid-summer issue of Managing Intellectual Property features its third annual list of the 50 Most Influential People in Intellectual Property. This list, for the first time ever, contains the names of 49 human beings and one fictional Kat.

The IPKat, on behalf of his blogmeisters, would like to take this opportunity of saying a big "thanks" to all of his readers and interlocutors: your comments and your insights have helped make this all possible.

2 ... and what else is in the current MIP?

This being the summer, it's time for the combined July-August issue of Managing Intellectual Property. This issue leads with a strong piece by MIP's editorial team of Emma Barraclough, Sam Mamoudi and editor James Nurton on the increasingly complex interaction between the drive to establish common technological standards in the high-tech and communications sector and the demand for a return on private IP investment.

There's also what the IPKat rates as one of the most important articles published in any journal this year: the piece by Ben Goodger and Patsy Day (Rouse & Co) on the likely dire impact of the UNCITRAL Convention on the Assignment of Receivables in International Trade upon IP royalty-bearing transactions. If ever you depend upon licensees gathering in royalties from sublicensees and then passing them on to you, read this with fear and trepidation ...

3 Thirsty thief may have drunk Weapon of Mass Destruction

That's about the most bizarre headline to have been given to an IPKat story, but it fits the tale pretty well. Ananova cites The Scotsman as reporting that a clear plastic two-litre bottle of melted Antarctic ice going by the name of "Weapon of Mass Destruction", supposedly a work of art by one Wayne Hill, was missing, presumed drunk to the last drop by a thirsty thief.

Said Mr Hill:

"It looked like an ordinary bottle of water, but it was on a plinth, labelled, described and in the programme of the whole festival. It was very, very clear what it was - a work of art".

He apparently added:

"Nobody has any idea what has happened to it. It was there and then it was gone".

The alleged work of art was valued at £42,500. If it were drunk, the IPKat thinks he knows what might have happened to it, but he's not going to say ... He also wonders at the artist's name, "Wayne Hill", since that's also the name of a Water Resources Center in Georgia, USA.

Alterations to the CTM Implementing Regulation entered into force on Monday (25 July).

Main changes include:*Graphical representation – for colours per se, designating a colour code is optional and it will be possible to file electronic representations of sounds.*Dividing applications will be possible.*The opposition procedure has been reframed.*The transfer fee will be abolished.*Changes to the conditions under which licences need to be recorded.*Clarification of the new-style conversion procedure.*Clarification that OHIM has a choice between fax and post for notification*Documents except decisions subject to appeal will be sent by ordinary mail.*Postal strikes except for those in Spain will become irrelevant to deadlines.*Professional representatives need not file an authorisation as per current OHIM practice.*Continuation of proceedings past unobserved time limits becomes possible.*The formalities for renewal are reduced to the minimum.

The IPKat says that these all sound like sensible ways of making life easier for OHIM users – good stuff!

Tuesday, 26 July 2005

The UK has not been renowned for the speed or economy with which it decides its patent disputes. This is a shame, because since November 2003 the Patents Court has had a special streamlined procedure for fast-tracking patent litigation. In Canady v Erbe Elektromedizin GmbH and others (decided yesterday by Mr Justice Pumfrey and speedily picked up by the Butterworth All England Direct subscription service) this procedure was utilised (for the streamlined procedure, click here and scroll down to item 10).

Canday owned a patent for a surgical tissue coagulator, consisting of a tube that was used for the transmission of argon or another noble gas. The claim specified that the device had a handle for the purpose of manipulation. Canady sued Erbe, a German company that made medical equipment, as well as various other defendants, two of whom argued that there had been no infringement since the allegedly infringing products did not have any handles. Those defendants applied for a split trial and an order that the issue of infringement be heard under the streamlined procedure, leaving the dispute relating to the validity of the patent to be determined at a later trial. Pumfrey granted the order: since the issue of infringement was, essentially, a matter of construction of the patent and might be dealt with quickly according to the streamlined procedure. If the patent was not infringed, there was no need to spend time and effort trying to invalidate it.

The IPKat likes this. Splitting of infringement and validity issues works particularly well in low-technology areas where the claims are relatively easy to construe.

2 Scotland on steroids?No, it's England again ...

People sometimes forget that, while the United Kingdom has a unified patent system, it does not have a single legal system, as any canny Scotsman will quickly remind you. In Ivax Pharmaceuticals UK Ltd v Akzo Nobel NV (also decided yesterday in the Patents Court and spotted by All England Direct, but this time heard by Mr Justice Lewison) Ivax sought a declaration that proceedings to revoke one of Akzo's steroid patents should be heard in Scotland rather than in England, on the basis that it was the most appropriate forum.Lewison J dismissed the application and held that, balancing the competing factors, England was the most appropriate forum. Ivax was registered in England and conducted its business there, while Akzo was a Netherlands company. Although proceedings which had been commenced in Scotland by Ivax's sister company also involved Akzo's patent, they related to different aspects of the steroid’s manufacture and there was no significant overlap in the subject matter at the centre of the disputes. Nor was there any risk that the courts would reach inconsistent findings of fact.

The IPKat, while noting the decision, reminds readers that there is a fully-fledged and highly competent legal profession north of the border (click here to search for Scottish IP decisions).

Monday, 25 July 2005

Dutch copyright collecting society, Buma/Stemra, is seeing compensation for royalties lost through podcasting according to DMEurope.com. Podcasting enables producers to make audio content available over the internet. Subscribers can then subscribe to feeds that automatically download new programs. Burma/Stemra claims that podcasting should be treated the same as webcasting and that permission must be sought from the copyright owner before use is made of audio material. As an interim measure until January 2006, the society is arguing that professional podcasters should pay 85 euros per month while amateurs should pay up to 35 euros per month.

The IPKat is firmly of the opinion that copyright shouldn’t go out the window just because there’s a new way of infringing it. However, he advises copyright owners to think seriously about how they can work with, rather than hinder, new technology if they want to avoid the sort of problems that they were faced with at the height of illegal music downloading.

IPKat co-blogmeister Ilanah has written a conference paper for August’s 5th IP Scholars’ Conference, hosted by the Cardozo Law School, Yeshiva University, New York.

The paper is entitled “Dilution in the United States and European Union (and Beyond) Compared” and focuses in particular on the new test for blurring under the US Trademark Dilution Revision Act 2005 and how the factors mentioned under the test would be treated in the EU. Dilution protection under international law is also considered.

If anybody would like a copy, please email here. Any comments, however critical, would be welcomed.

The July 2005 issue of Sweet & Maxwell's European Copyright and Design Reports contains just three decisions:

* Microsoft Corp v European Commission, the Court of First Instance's analysis of whether Microsoft's failure to unbundle elements of its software constituted an abuse of a dominant position under Article 82 of the EC Treaty;

* Tayplan Ltd v D&A Contracts, a Scottish Court of Session case that deals with the niceties of perfecting title in copyright;

* Coffey v Warner/Chappell Music Ltd, a delightful High Court decision of Mr Justice Blackburne to the effect that "voice expression", "pitch contour" and certain elements of "syncopation of or around" words did not constitute protectable copyright subject matter. Having held accordingly, he dismissed the claim that Coffey's song was infringed by Madonna's "Nothing Really Matters".

The IPKat says, wherever in Europe (or even beyond Europe) you are, if you know of any case you think should be reported in the ECDR, drop co-blogmeister Jeremy a line here.

2 Now a patent for Smileys?

This is Microsoft's US patent application 0050156873, filed last week for the creation and transfer of emoticons. According to the Abstract:

"Methods and devices for creating and transferring custom emoticons allow a user to adopt an arbitrary image as an emoticon, which can then be represented by a character sequence in real-time communication. In one implementation, custom emoticons can be included in a message and transmitted to a receiver in the message. In another implementation, character sequences representing the custom emoticons can be transmitted in the message instead of the custom emoticons in order to preserve performance of text messaging. At the receiving end, the character sequences are replaced by their corresponding custom emoticons, which can be retrieved locally if they have been previously received, or can be retrieved from the sender in a separate communication from the text message if they have not been previously received".

Comments -- as if any were needed -- can be found on ZDNet UK , which attacks Microsoft for seeking to patent Smileys. P2PNet explains that its's not precisely Smileys that Microsoft is seeking to patent but in case you still needed any convincing that the USPTO issues patents which go beyond reasonable justification, here's a shortie from the Boston Herald on how the US patent system has gone aground.

3 Charity starts at home: but what of IP rights?

The IPKat found this feisty piece on control of intellectual property rights created by charities, in blackenterprise.com. It seems that the Scottish Executive is requiring charities to assign to it the intellectual property rights in any software, publicity materials and research results that arise in consequence of the Scottish Executive having funded them.The author argues that charities should not be ordered to surrender all IPR as a matter of course, but that the issue of whether the Scottish Executive takes control of it is a matter to be discussed and negotiated on the merits of each piece of funding.

The IPKat agrees, if only to spare the Scottish Executive the embarrassment of holding a portfolio of potentially conflicting or competing intellectual property rights which it has neither the ability nor the inclination to exploit commercially.

Saturday, 23 July 2005

Via BAILII the IPKat has just dredged up this decision, London General Holdings Ltd and others v USP plc and another [2005] EWCA Civ 931, which came up before three wise men -- Lords Justice Waller, Laws and Jacob of the Court of Appeal -- on Friday.

Back in 2002 LGH was found liable for infringing copyright in a document that was intended to be a template for a new scheme of providing extended warranties on goods to consumers by way of trust. The matter was referred for an inquiry into damages to the master, who ordered payment of a notional royalty in respect of a transaction in which LGH used a copy of the document to prepare its own draft documentation for a warranty scheme, incorporating a trust mechanism, that it sought to provide to a prospective client. The master also awarded damages to reflect the reduction in the price that USP had to offer for its services in order to secure a contract to provide a scheme to another company after LGH had already introduced its infringing document to it. Before the award of that contract, but after the reduction in price, LGH forwarded to that company a copy of USP's document, which was to be tailored to its needs if they won the contract. The master made no award in relation to this on the basis that, by that time, the trust mechanism that lay at the heart of the document had lost its force as a negotiating tool. In these proceedings LGH appealed against the award of damages in respect of the price reduction. In the event that the appeal was successful, USP cross-appealed against the amount of the notional royalty awarded.

The Court of Appeal, for whom Laws LJ delivered the main judgment, allowed both LGH's appeal and USP's cross-appeal. According to that court, the claimed loss was, as a matter of principle, beyond the scope of the protection afforded by the law of copyright. Where the copyright work was a written document, it was a basic principle that the nature of copyright infringement was the unauthorised use of the actual text of the document, not the pirating of the ideas contained in it. Iin this case, nothing in the discussions leading to the reduction in price turned on the actual text of the document itself. It was the idea of a trust that had mattered. However, under the circumstances, the notional royalty should itself be uplifted.

The IPKat was impressed by what Laws LJ said at the end of his judgment:

"This is, of necessity, a rough and ready exercise. We are required to put a value on a transaction which never took place – it is a notional royalty; and therefore, of course, the evidence is subjunctive: what this or that party would have done in circumstances which were not actually in Contemplation".

This is a refreshing admission that damages, and indeed many other IP valuations, are not the product of precise scientific analysis, whatever some self-proclaimed experts may say to the contrary.

Friday, 22 July 2005

The IPKat has received this from Edward Tomlinson, of Frohwitter. It's a decision of Peter Prescott QC, sitting as a Patents Court Deputy Judge in CFPH LLC v Comptroller-General of Patents, Designs and Trade Marks [2005] EWHC 1589 (Pat), 21 July 2005, a case that addresses the topical issue of patents for computer programs.

CFPH applied for two patents for networked interactive betting, the inventions consisting of software that enabled a client to receive the most up-to-date information before placing his bet. The applications were refused by the Patent Office, the examiner considering that all they did was to provide an improved transactional process. This being so, the inventions were no more than a business method and were thus excluded from patentability under s.1(2) of the Patents Act 1977 (= Article 52 of the European Patent Convention). Since those inventions provided no technical contribution (which could render an otherwise excluded invention patentable), they were excluded subject-matter "as such" and could not be patented.

CFPH appealed, arguing that the Patent Office ought to employ the reasoning that was used by the European Patent Office, which filtered out excluded subject-matter at the stage of considering inventive step, while the UK Patent Office did so when considering novelty. Peter Prescott QC dismissed the appeal since it was clear that neither of the two alleged inventions was patentable. In any event, he ruled, it didn't matter which approach was used, since each of them would lead to the same result.

In giving his ruling, Peter Prescott QC spoke eloquently of the gulf between the real world in which patents dominate markets and the legal world -- in which words are king. He said (at paragraphs 9 to 12):

"What is an 'invention' (in the sense I am now concerned with) is a topic bedevilled by verbal formulae – and by the sweeping of problems under the carpet. So, before I go any further I want to bring some of those problems out into the light of day.

But first: does it really matter? Is it merely a sterile argument about the meaning of words? To which I answer that whoever controls the meaning of 'invention' controls what can be patented and hence an important aspect of industrial policy. There can be but one justification for having a patent system, and that is that it is good for the people of the country. If the patenting of certain things does more harm than good, it matters. Patents that are wrongly granted can be very expensive to challenge and may deter small and medium enterprises.

At the risk of some inaccuracy, patents are supposed to be granted for non-obvious advances in technology. I said "at the risk of some inaccuracy". We sense that we know 'technology' when we see it. And no doubt that is correct, most of the time.

But it is not correct all of the time. Therein lies the delusion. You can prove that for yourself by trying to find a definition of 'technology' that everybody can agree on. The more you try, the more you will discover what a horribly imprecise concept it is. (Would it cover an astro-navigation chart? Naval tactics? Double-entry bookkeeping? The phonetic alphabet?) Many have tried to frame an acceptable definition, but to the best of my knowledge none have succeeded. It is like the equally vexing question, "What is Art?". The hard truth is this: concepts of that sort have no existence, and words of that sort have no meaning, except by human convention; but human beings are hopelessly in disagreement at the margin. And it is, precisely, at the margin of uncertainty that cases come up for decision".

If Peter Prescott keeps demystifying patent law, the IPKat says, will he still be allowed to sit as a judge?

The IPKat has just stumbled across Legislating IP, a US-based intellectual property law blog compiled by a team of eight bloggers: their stated mission is "to consolidate available information concerning copyright, trade mark and patent legislation in the Courts, in Congress and throughout the United States". It looks rather good.

2 WIPO mag

The May/June issue of the World Intellectual Property Organization's WIPO Magazine has just reached the IPKat. It contains rather more column space on the 5th Annual Intellectual Property Day than most publications were prepared to give it. There's also some reassuring text concerning the value of copyright to the entertainment industries of India and Argentina respectively.

3 Euro-counterfeiting

The European Commission's Official Journal , L185, carries the text of Council Decision 2005/511/JHA of 12 July 2005 on protecting the euro against counterfeiting, by designating Europol as the Central Office for combating euro counterfeiting. The IPKat, keen credit-card carrier and internet shopper that he is, has almost forgotten what real currency looks like -- and that's the problem: consumer recognition of fake currency is likely to diminish when it becomes less frequently used.

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